Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Status of Claims
The following is a SECOND NON-FINAL OFFICE ACTION in response to applicant’s amendments to and response for Application #19/093,083, filed on 05/11/2026.
Claims 1-20 are pending and have been examined.
Double Patenting
Claims 1, 10, and 15 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 9, and 15 of Application #17/683,143, now U.S. Patent No. 12,340,433. The current claims are a broader version of the patented parent claims, and there are no mutually exclusive limitations. While the current claims as amended include “creating a second mapping of the document object to the value in the document model,” this is describing the “storing a value to the document object of a document model associated with an agreement document” limitation at the beginning of the claims. The parent claims include the limitation “storing, by the document management system, a document object value from the agreement document to the document object of the document model.” Further, the patented parent claims include storing that includes mapping in other steps. Therefore, the “second mapping” of the current claims is considered an obvious variant.
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-6 and 8-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The rationale for this finding is explained below.
Per Step 1 of the analysis, the claims are analyzed to determine if they are directed to statutory subject matter. Claim 1 claims a method, or process. A process is a statutory category for patentability. Claim 10 claims a non-transitory computer-readable media. Therefore, the claim is interpreted as an article of manufacture. AN article of manufacture is a statutory category for patentability. Further, the claim is in conformity with the Kappos Memorandum of 2010 as it includes the phrase “non-transitory.” Claim 15 claims a system comprising a processor and a memory. Therefore, the system is interpreted as an apparatus. An apparatus is a statutory category for patentability.
Per Step 2A, Prong 1 of the analysis, the examiner must now determine if the claims recite an abstract idea or eligible subject matter. In the instant case, the independent claims are directed towards an abstract idea. Specifically, independent claims 1, 10, and 15 recite “removing data associated with the agreement document, based on receiving a request for document validation of the agreement document, determining, based on the document model including the first mapping of the document object to the condition and the second mapping of the value to the document object, whether the value stored in the document object satisfies the condition.” Therefore, the claims recite an abstract idea, namely “certain methods of organizing human activity.” Specifically, the claims recite “commercial or legal interactions including agreements in the form of contracts.” The claims describe analysis and determination of an agreement document and determining if the agreement and the incoming information satisfies the condition information. The claims facilitate the drafting and execution of a legal agreement document. The claims simply automate these steps using a computer. Using mappings and conditions to validate execution of an agreement is considered part of a legal interaction such as facilitating signing or execution of a contract, management of a will or estate among parties, and other similar Therefore, the claims recite an abstract idea, namely “commercial or legal interactions including agreements in the form of contracts.”
Per Step 2A, Prong 2 of the analysis, the examiner must now determine if the claims integrate the abstract idea into a practical application. The additional elements of the independent claims include “a storage device,” “a processor,” and a “memory.” However, these additional elements are considered generic recitations of a technical element and are recited at a high level of generality. These additional elements are being used as “tools to automate the abstract idea” (see MPEP 2106.05 (f)) and are not recitations of a special purpose computer or transformation (see MPEP 2106.05 (b) and (c)). Therefore, these additional elements are not considered to integrate the abstract idea into a practical application. The claims also include “storing a document object value to a document object of a document model associated with an agreement document, the document model including a first mapping of the document object to a condition, and wherein storing the value to the document object comprises creating a second mapping of the document object to the value of the document model.” This additional element, absent further details, is considered “storing and retrieving information in a memory,” which is a generic recitation of a technical element and is listed in the MPEP 2106.05 (d) (II) (iv) as an example of conventional computer functioning- see Versata Dev Grp v SAP and OIP Techs v Amazon.com. Further, a “mapping” is considered a generic recitation of a technical element and the examiner takes Official Notice that it is old and well known in the computer arts to generate a mapping between two data points in a storage. Therefore, these additional elements are not considered to integrate the abstract idea into a practical application.
Per Step 2B of the analysis, the examiner must now determine if the claims include limitations that are “significantly more” than the abstract idea by demonstrating an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The additional elements of the independent claims include “a storage device,” “a processor,” and a “memory.” However, these additional elements are considered generic recitations of a technical element and are recited at a high level of generality. These additional elements are being used as “tools to automate the abstract idea” (see MPEP 2106.05 (f)) and are not recitations of a special purpose computer or transformation (see MPEP 2106.05 (b) and (c)). Therefore, these additional elements are not considered significantly more than the abstract idea itself. The claims also include “storing a document object value to a document object of a document model associated with an agreement document, the document model including a first mapping of the document object to a condition, and wherein storing the value to the document object comprises creating a second mapping of the document object to the value of the document model.” This additional element, absent further details, is considered “storing and retrieving information in a memory,” which is a generic recitation of a technical element and is listed in the MPEP 2106.05 (d) (II) (iv) as an example of conventional computer functioning- see Versata Dev Grp v SAP and OIP Techs v Amazon.com. Further, a “mapping” is considered a generic recitation of a technical element and conventional computer functioning, as it is not an improved mapping technique, and the examiner takes Official Notice that it is old and well known in the computer arts to generate a mapping between two data points in a storage. Therefore, these additional elements are not considered significantly more than the abstract idea itself.
When considered as an ordered combination, the claim is still considered to be directed to an abstract idea as the claim steps in the ordered combination simply recite the logical steps for storing and analyzing the document object value of the document object of a document model, removing data associated with the agreement from the device, and determining based on the mapping whether the document object value satisfies the condition. Therefore, the ordered combination does not lead to a determination of significantly more.
When considering the dependent claims, claims is considered part of the abstract idea. Claim 2 is considered part of the abstract idea, as simply describing what the condition data is does not change the analysis. Claim 3 is considered part of the abstract idea as there is no technology recited. Claim 4 is considered part of the abstract idea, as the generating steps are part of a facilitation of agreement in the form of contracts in a legal setting. The outputting of the data on a GUI is considered “receiving and/or transmittal of data over a network,” cited in the MPEP 2106.05 (d) (II) (i-ii) as an example of conventional computer functioning- see Symantec, TLI Communications, and buySAFE v Google. Claims 5 and 6 are considered part of the abstract idea, as facilitating signatures on an agreement and validating condition satisfaction is considered part of facilitating agreement in the form of contracts as a legal process. The outputting of data on a GUI is considered “receiving and/or transmittal of data over a network,” cited in the MPEP 2106.05 (d) (II) (i-ii) as an example of conventional computer functioning- see Symantec, TLI Communications, and buySAFE v Google. Claim 8 is considered part of the abstract idea. Claim 9 is considered part of the abstract idea. The “document object value represented as a text string and absent corresponding metadata” and “generating a data structure” is considered conventional computer functioning and the examiner takes Official Notice that it is old and well known in the computer arts to have a “document object value represented as a text string and absent corresponding metadata” and “generate a data structure.” Claims 7 and 20 are considered eligible subject matter. The other dependent claims mirror those already discussed above.
Therefore, claims 1-6 and 8-19 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. Vs. CLS Bank International et al., 2014 (please reference link to updated publicly available Alice memo at http://www.uspto.gov/patents/announce/alice_pec_25jun2014.pdf as well as the USPTO January 2019 Updated Patent Eligibility Guidance.)
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 8-12, and 15-17 are rejected under 35 USC 102 (a) (2) as being anticipated by Jansz, Pre-Grant Publication No. 2023/0214424 A1.
Regarding Claims 1, 10, and 15, Jansz teaches:
A method (media) (system)… comprising:
storing a value to a document object of a document model associated with an agreement document (see Figures 1-2, [0028]-[0029], [0034]-[0037], [0054]-[0064] in which document object values associated with a document object of a document model are stored), the document model including a first mapping of the document object to a condition (see [0036], [0073], [0076]-[0078], and [0086] in which the document model includes mapping of document objects to conditions; see also [0027], [0029], [0037]-[0038], [0061], [0077], [0086], and [0091]-[0092] which teach a mapping of document objects to conditions), and wherein storing the value to the document object comprises creating a second mapping of the document object to the value in the document model (see Figure 2 #’s 210 and 212, [0030], [0034]-[0036], [0062]-[0064], [0073], [0076], and [0078])
based on the storing of the value to the document object, removing data associated with the agreement document from a storage device (see Figures 1-2, [0028]-[0029], [0034]-[0037], [0054]-[0064], and [0086]-[0092])
based on receiving a request for document validation of the agreement document, determining, based on the document model including the first mapping of the document object to the condition and the second mapping of the value to the document object, whether the value stored in the document object satisfies the condition (see [0027], [0029], [0037]-[0038], [0061], [0077], [0086], and [0091]-[0092] which teach a mapping of document objects to conditions to determine if the value satisfies the condition, including [0037]-[0038] and [0089] in which a user request is received for document validation of the agreement document; see also [0073]-[0079] in which the mapping of the document object to one or more conditions and the mapping of values to the document objects are used in the generating and validation of the contract)
Regarding Claims 2, 11, and 16, Jansz teaches:
the method of claim 1…
wherein the condition indicates a consideration characteristic of the agreement document and wherein the value includes an indication whether a party associated with the agreement document satisfies the consideration characteristic (see [0034]-[0038]; see also [0061], [0090]-[0092] in which the consideration characteristic is satisfied)
Regarding Claims 3, 12, and 17, Jansz teaches:
the method of claim 1…
receiving a query indicating the condition, wherein the request for document validation of the agreement document includes a query indicating the condition, and outputting, based on the query, a determination of whether the document object value stored in the document object satisfies the condition (see [0029], [0034]-[0039], [0077]-[0079], and [0086]-[0092] in which the consideration characteristic is determined to be satisfied when the stored document object and model are queried)
Regarding Claim 8, Jansz teaches:
the method of claim 1
accessing a template associated with an agreement type corresponding to the document model, the template including a variable for the document object (see [0034]-[0039], [0055]-[0056], [0063]-[0065], [0079]-[0080], and [0100])
generating the agreement document by at least assigning the value of the document object to the variable of the template (see [0034]-[0039], [0055]-[0056], [0063]-[0065], [0079]-[0080], and [0100])
Regarding Claim 9, Jansz teaches:
the method of claim 1
wherein storing the value from the agreement document to the document object of the document model comprises:
receiving a document, the document including the document object and the value, the value represented as a text string and absent corresponding metadata, identifying the document as corresponding to the agreement document, identifying the value of the document object within the document using the agreement document (see [0027]-[0028], [0072], [0079], and [0082]-[0090])
generating a data structure comprising a second mapping, wherein the document model further comprises the data structure (see [0034]-[0036] and [0062]-[0064])
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 4-7, 13-14, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Jansz, Pre-Grant Publication No. 2023/0214424 A1 in view of Voltz, et al., Pre-Grant Publication No. 2023/0016689 A1.
Regarding Claim 4, Jansz teaches:
the method of claim 3
wherein outputting the determination comprises:
wherein the determination of whether the document object value stored in the document object satisfies the condition comprises an indication that the document object satisfies the condition (see [0029], [0076]-[0078], and [0091]-[0092])
generating the agreement document using the document model (see [0034]-[0036], [0054]-[0059], and [0064]-[0067])
Jansz, however, does not appear to specify:
generating, based on the query, data for a graphical user interface to include the generated agreement document in conjunction with the indication that the document object satisfies the condition outputting the data for the graphical user interface
Voltz teaches:
generating, based on the query, data for a graphical user interface to include the generated agreement document in conjunction with the indication that the document object satisfies the condition outputting the data for the graphical user interface (see Figures 2A and 5B, [0046]-[0049], [0054]-[0057], and [0109]-[0110])
It would have been obvious to one of ordinary skill in the art at the time of the filing of the application to combine Voltz with Jansz because Jansz already teaches determining satisfaction of a condition and facilitating signing of the agreement, and generating a GUI to display the agreement and associated data would allow for full access and interaction by users and easy facilitation of the various aspects of the agreement.
Regarding Claims 5, 13, and 18, Jansz teaches:
the method of claim 1…
Jansz, however, does not appear to specify:
receiving a request to electronically sign the agreement document, wherein the request for document validation of the agreement document includes the request to electronically sign the agreement document
based on determining the value does not satisfy the condition:
denying the request to electronically sign the agreement document outputting an indication of the condition of the object requirement that is not satisfied by the document object value included in the document object
Voltz teaches:
receiving a request to electronically sign the agreement document wherein the request for document validation of the agreement document includes the request to electronically sign the agreement document (see Figures 2A and 5B, [0046]-[0049], [0054]-[0059], and [0109]-[0110])
based on determining the document object value does not satisfy the condition:
denying the request to electronically sign the agreement document outputting an indication of the condition of the object requirement that is not satisfied by the document object value included in the document object (see [0034]-[0036] and [0050]-[0052]; the examiner notes that while the citations do not explicitly say the request is “denied,” the request is only approved if the conditions requirements are met)
It would have been obvious to one of ordinary skill in the art at the time of the filing of the application to combine Voltz with Jansz because Jansz already teaches determining satisfaction of a condition and facilitating signing of the agreement, and generating a GUI to display the agreement and associated data would allow for full access and interaction by users and easy facilitation of the various aspects of the agreement.
Regarding Claims 6, 14, and 19, Jansz teaches:
the method of claim 1…
based on determining the value satisfies the condition:
generating, based on the document model, the agreement document (see [0034]-[0036], [0054]-[0059], [0064]-[0067])
Jansz, however, does not appear to specify:
outputting the agreement document via a signing interface configured to enable a signing entity to electronically sign the agreement document
determining that the signing entity has provided an electronic signature to electronically sign the agreement document
modifying the document model to include the electronic signature
Voltz teaches:
outputting the agreement document via a signing interface configured to enable a signing entity to electronically sign the agreement document (see Figures 2A and 5B, [0046]-[0049], [0054]-[0059], [0065]-[0066], and [0109]-[0110])
determining that the signing entity has provided an electronic signature to electronically sign the agreement document (see Figures 2A and 5B, [0046]-[0049], [0054]-[0059], and [0109]-[0110])
modifying the document model to include the electronic signature (see [0065]-[0066])
It would have been obvious to one of ordinary skill in the art at the time of the filing of the application to combine Voltz with Jansz because Jansz already teaches determining satisfaction of a condition and facilitating signing of the agreement, and facilitating signing and modifying the document would allow for ratification of the agreement document and verified finality and storage.
Regarding Claims 7 and 20, the combination of Jansz and Voltz teaches:
the method of claim 6…
Jantz further teaches:
wherein generating the agreement document comprises
storing the agreement document at a storage (see [0063], [0073], [0105], [0109]-[0111], and [0117]-[0120]
deleting the agreement document from the storage (see at least [0081])
Voltz further teaches:
wherein the method further comprises:
based on determining that the document model has been modified to include the electronic signature (see [0065]-[0066])
It would have been obvious to one of ordinary skill in the art at the time of the filing of the application to combine Voltz with Jansz because Jansz already teaches determining satisfaction of a condition and facilitating signing of the agreement, and facilitating signing and modifying the document would allow for ratification of the agreement document and verified finality and storage.
Response to Arguments
Regarding the applicant’s arguments directed to the 101 rejection:
Regarding the applicant’s argument on pages 10-11 of the response that amended claim 1 reflects a technical improvement in the field of database management of agreement documents, since once the value is stored to the document object of the document model associated with the agreement document, data associated with the agreement document is removed from a storage device:
The examiner does not see a technical improvement to the storage capacities of a computer. The specification describes in [0007] and [0057]-[0059] that the values are stored to the document object of the document model primarily so that the values can be searched and easily changed without having to search the entire unstructured document. Tangential secondary benefits are mentioned, such as “reducing process resources consumed,” “occupy less memory than their counterpart electronic agreement documents,” “generation of custom agreements,” “minimize unnecessary usage of processing, network, and memory resources,” and preventing “storing an invalid document in memory.” There is not detailed description of a technical improvement in database management of documents or storage of documents by a computer like you would see in the specification in Enfish. Further, “removing data associated with the agreement document from the storage device” could make a large or relatively small difference, depending on the document.
Therefore, the argument is not persuasive and the rejection is sustained.
Regarding the applicant’s arguments directed to the 102 rejection:
The applicant’s amendments to the claims have overcome the rejection and the rejection has been withdrawn.
Regarding the applicant’s arguments directed to the 103 rejection:
The applicant’s argument have been considered in light of the amendments to the claims but are moot in light of the new grounds of rejection necessitated by the applicant’s amendments.
Conclusion
The following prior art references were not relied upon in this office action but are considered pertinent to this application:
Yoshioka, et al., Pre-Grant Publication No. 2007/0050713 A1- teaches digital document management program and interface including generation of contracts and agreement documents, verification of conditions, signing of contracts digitally, etc.
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from the Examiner should be directed to Luis A. Brown whose telephone number is 571.270.1394. The Examiner can normally be reached on Monday-Friday 8:30am-5:00pm EST. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, JESSICA LEMIEUX can be reached at 571.270.3445.
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Commissioner of Patents and Trademarks
Washington, D.C. 20231
or faxed to 571-273-8300.
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/LUIS A BROWN/Primary Examiner, Art Unit 3626
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